How to Protect a Catchphrase

7 Graces community member Lubna Gem Arielle explains how to protect a catchphrase as a trade mark.

Note from Lynn Serafinn: Sorry for the break in blogging over the past couple of weeks. I’ve been busy celebrating my 60th birthday! I’ll be back on schedule starting next Friday. Until then, I know you’ll enjoy this highly informative article from Lubna.

Gwyneth Paltrow unsettled media and the masses when she announced that she and Chris Martin were going to deal with the break-up of their marriage with a ‘conscious uncoupling’. The press had a field day, supposing, smirking and jabbing at what this could possibly mean. This vampiric thirst may recently have been quenched a little, as Paltrow announced that she did not invent the phrase.

So, where did this phrase come from? Several years before Paltrow’s pronouncement, I heard an online interview with the coach Katherine Woodward Thomas. She mentioned a process, the crux of which was to enable couples to end a relationship without ‘turning your soul mate into your soul hate’ and she referred to it as ‘conscious uncoupling’. The interview stuck in my mind because she also talked about how a graceful parting becomes a hard task once lawyers get involved, and I’d reflected on how the legal process reduces relationships to procedural frameworks and tactics.

Since the press interest in conscious uncoupling, a few articles and news reports have attributed the phrase to Woodward Thomas, and the US Patent Office website shows that she has applied to register ‘Conscious Uncoupling’ as a trade mark for her coaching business.

To me, this highlights the importance of being clear as to when, whether and how far you can protect phrases you use in the context of your business.

How to protect a catchphrase as a trade mark

In my experience, there is some confusion amongst business owners as to whether and how a snappy catchphrase can be safeguarded against use by others and protected as a business asset. A question I’m often asked is: ‘Can I copyright it?’ This is a good question, as copyright can protect the written word as a literary work, where it is original and there has been some degree of skill and effort. Unfortunately, a catchphrase will generally be too short to qualify as a literary work.

It may, however, be capable of protection as a registered trade mark, and here’s my four-stage guide.

Stage 1: Check that you use the phrase to indicate the source of certain goods or services.

The function of a trade mark is to indicate the source of goods and services (such as ‘Google’ for a search engine) and is often described as a ‘badge of origin’.

A trade mark does not give anyone absolute control and ownership to use a phrase or word throughout the English language, but it can give you an exclusive right to use it in the country or countries of registration for specific classes of good and services set out in an international classification system known as the NICE system. For example, a business coach might provide 1:1 training and corporate training in Class 41, with newsletters and training manuals in Class 16 and recorded and online materials in Class 9.

Stage 2: Check whether anyone else is already using the phrase.

Make sure your phrase really is unique and no one else is already using it – at least not in the countries where you operate. Trade marks are territorial, in that your rights apply in the countries where you have registered a mark. The exception to this is the Community Trade Mark or CTM, which is a single mark effective in all countries within the EU.

To check whether the phrase is in use, search the relevant trade mark registers to see whether there is an existing registration or application. The UK Intellectual Property Office (IPO) and US Patent and Trademark Office (PTO) have a free search facility, and other countries may as well.

If there are existing marks, but in different categories of goods and services, in general, this would not be problematic.

I also suggest checking your phrase on Google or another search engine to get a general flavour of what else is about.

Stage 3: Apply to register.

As trade marks are territorial, applications have to be made on a country by country basis. Application in the UK is via the Intellectual Property Office, or for a Community Trade Mark or CTM via the Office for the Harmonisation of Internal Marks. Other countries have their own national registries.

The practical effects of this are that even if you consider yourself to be ‘global’ (and, indeed, the Internet means many of us have a degree of global presence), unless you have an unlimited budget, you will have to be selective and strategic in where you register, bearing in mind that in any case, in most countries you can only register a mark where you are actually using it, or will do so within the next 5 years.

In the UK, you can apply directly via the IPO or engage the services of a trade mark attorney.

Stage 4: Look after it!

Once you have a registered trade mark, you must treat it with care. Otherwise, you will be at risk of losing it. You must maintain its essential quality by using it to identify the source of your goods or services, rather than allowing your trade mark to become known as the name for whatever it is you provide. If you do, it will be considered generic and no longer valid as a trade mark. For example, ‘Escalator’ started out as a trade mark for moving stairways, owned by the OTIS company, but later became used for ALL moving stairways and the OTIS company lost its trade mark.

To prevent this from happening, there are a few key points to keep in mind:

Use the mark to identify your product, rather than as a substitute for the product name. For example, compare: ‘Let’s take the escalator’ to ‘Let’s take the ESCALATOR moving walkway’. The first is generic use; the second respects the trade mark.

Emphasise your wording – use either upper case (as in ESCALATOR) or quotation marks (‘Escalator’) and use the registration symbol ®.

Don’t use it as a verb. Google have experienced challenges with this. To be very precise, we actually ‘use the Google search engine to search’, but many of us simply ‘google’ for information. Google has even made it into the dictionary as a verb, but the saving grace is that it is not an ordinary verb for any old searching, but instead refers to a search online using the Google search engine. Had ‘googling’ referred to any online searching, this would have posed a serious threat to the trade mark.

Prevent others from misusing your mark. If others are misusing your trade mark – as a verb or to identify any product in your class – you should write them a friendly email or letter, telling them it is your trade mark, how it should be used and asking that they please do so.

Where you come up with a unique catchphrase and use it as part of your business describing products or services that you offer, registering a trade mark will give you limited but exclusive rights to use the catchphrase; but, as mentioned, you will not be able stop others from using that phrase altogether.

Also, if you want to use your phrase ‘globally’ the process of obtaining ‘global’ trade mark registration can be time-consuming and costly. Trade marks are effectively the legal part of ‘branding’, so it makes good sense to check how far a catch phrase is part of the longer-term branding if you decide to register it as a trade mark.

I’d love to know your approach to any catchphrases you use in your business. Have you applied or considered registering them as a trade mark or are you happy for your catchphrases to be in a wider use? Let me hear from you in the comments below.

Lubna is a graduate of the 7 Graces Foundations of Ethical Marketing course.Contact the 7 Graces Project to find out how you can have this course delivered to members of your organisation.

LUBNA GEM ARIELLE is a lawyer who went back to art school and has a portfolio career. As a legal educator, she lectures on MA programmes at Birkbeck and Sotheby’s Institute of Art, makes law accessible for creatives as a professional speaker and trainer and is a writer/presenter for Legal Network Television. She is a legal adviser to Artquest, providing advice to visual artists. In her creative practice, Lubna works with sharing and integrating information, stories and knowledge across real and virtual media. She is also a legal experiential practitioner specialising in outcomes-focused communication with the Personal Communications Academy. Lubna is a graduate of the 7 Graces Foundations of Ethical Marketing Course and member of the 7 Graces Community and the Professional Speaking Association.

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